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Germany

The most prolific trademark attorney firms in Europe revealed

Data analysis reveals that, amongst representatives, Isabelle Bertaux ranks as the number one trademark filer in the EU, with Novagraaf and Arpe completing the top 3.

3 Mar 2020

US House fakes bill; MARQUES Spring Meeting cancelled; rise of counterfeits on TikTok – news digest

In our latest round-up, we look at the IP Office of New Zealand warnings of fraudulent invoices, a Chinese government news outlet pushing back against anti-IP sentiment, African Intellectual Property Organisation meeting the prime minister of Mauritania, and much more.

2 Mar 2020

Comedian legally changes name to Hugo Boss – important lessons for brands

UK comedian Joe Lycett has legally changed his name to Hugo Boss in protest at the fashion company’s trademark enforcement work in a move that provides crucial lessons for all trademark professionals.

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30 Mar 2020

Germany Trademark Prosecution Firm of the Year: Grünecker

17 Mar 2020

Trademark procedures and strategies: Germany

Commercial designations are protected against newer identical or confusingly similar trade designations and trademarks once they are first used in Germany. Read more

24 Jan 2020

Brand Tracker: the filing trends of the world’s most valuable brands

In the first instalment of a new series, we track the trademark filing activity of the world’s most valuable brands – revealing that Mercedes-Benz may be gearing up to launch an AI assistant. Read more

22 Jan 2020

No free ticket for toys at the border: BMW successfully defends itself against lawsuit by toy manufacturer

Well-known car manufacturer BMW has successfully defended itself against a lawsuit filed by a toy car manufacturer in Germany. The plaintiff sought an injunction and damages following an allegedly inadmissible seizure of goods at the border. Read more

Anti-Counterfeiting

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17 Jan 2020

KIPO urges idol IP protection, Extinction Rebellion brand headache, and CCFN praises US-China deal: news digest

In our latest round-up, we look at a Love Island star being reprimanded due to an Instagram post, the theme for World IP Day 2020, the Chilean IP office being praised for a reduction in the gender gap, and much more. Read more

29 Nov 2019

DPMA warns of scam invoices, Poundland versus Greggs, and WIPO DG candidate list widens: news digest

In our latest round-up, we look at the Philippines IP Office reviving its arbitration service, the advocate general finding that Amazon didn’t infringe on Coty’s trademark rights, the first GIs being processed in Ivory Coast, and much more. Read more

13 Sep 2019

Extinction Rebellion trademark, Egypt fee rise, and Crocs Gloves in art gallery: news digest

In our latest edition, we look at Māori uproar over a New Zealand trademark application, WIPO in Hungary, MARQUES addressing long goods and services lists at the EUIPO, and much more. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: Germany

For civil enforcement against counterfeiting, an application must be made to the ordinary courts. Preliminary ex parte measures play an important role, but are admissible only for some of the remedies available. Claims for damages, for example, can be enforced within substantive proceedings only. Read more

Brand management

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17 Jan 2020

Siemens’ controversial coal mine contract has put brand at risk of greenwashing accusations

The German conglomerate has portrayed itself as a steward of sustainability, but when it comes to corporate social responsibility, it’s an all or nothing game as this week’s coal mine contract backlash illustrates. Read more

25 Oct 2019

Supreme most searched fake brand, 'tm.com' for sale, and more unauthorised Greta Thunberg marks: news digest

In our latest round-up, we look at a new study finding few marketers are confident in consistent brand values, brands being warned of being too political, Diesel engaging in a trademark battle with a reality star, and much more. Read more

23 Oct 2019

Baker McKenzie leads law firm brand index; cross-border focus highlighted

Market analysis from Acritas has found that the most successful law firm brands come from global firms focusing on Germany at a time when much domestic growth has stalled. Read more

18 Oct 2019

A new dawn for grocery stores: how major brands are changing to counter low-cost rivals

The departure of Tesco’s CEO signifies the retailer’s successful turnaround, but this is just the beginning as long-time players overhaul businesses to stay in the game. Read more

Enforcement and Litigation

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20 Jan 2020

Nivea - recognise the blue?

The dispute between Unilever and Beiersdorf over the latter’s abstract colour mark for its ‘Nivea Blue’, which lasted for over a decade, has finally come to an end. Read more

9 Dec 2019

Litigation procedures and strategies: Germany

4 Dec 2019

Radiator grilles: Audi remains the lord of the four rings

The German Federal Court of Justice has held that an independent seller of spare parts had infringed Audi’s famous figurative mark by offering and selling radiator grilles featuring a mounting fixture in the shape of four rings. Read more

26 Nov 2019

Unregistered designs - how to disclose and save novelty

The Intellectual Property Enterprise Court in London has referred to the Court of Justice of the European Union two questions on unregistered Community design rights which have been discussed in legal literature for years. Read more

Government/Policy

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26 Sep 2019

Unauthorised 'Greta Thunberg' and 'Extinction Rebellion' trademarks could pose a threat to climate change activists

Two major figures in the climate change activism movement, campaigner Greta Thunberg and protest movement Extinction Rebellion, are facing a legal battle in Germany due to unauthorised trademark applications. Read more

29 Jul 2019

The top filers and a vision for the future: inside EUIPO operations

Less than a year into Christian Archambeau’s tenure as executive director, the EUIPO is laying the groundwork for future expansion. World Trademark Review’s annual focus on the office assesses current operations, reveals the most proactive filers and explores how the agency is taking a global view of trademarks. Read more

19 Oct 2018

Facebook’s WHOIS access woes, DPMA’s IP workshop for refugees, and Santa-Cruz leaves INAPI: news round-up

In our latest round-up, we look at the Croatian president talking up nation branding, Gucci voicing “reluctance” to work with Alibaba and JD.com, brand owners readying themselves for motion marks, and much more. Read more

12 Sep 2018

Trademark procedures and strategies: Germany

Commercial designations are protected against newer identical or confusingly similar trade designations and trademarks once they are first used in Germany, but details of this protection can be complex. Read more

Law Firms

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13 Jan 2020

IP services sector gets new player, as Novagraaf and PAVIS prepare to ramp up NovumIP launch

Novagraaf and PAVIS recently joined forces to create a new IP service provider. In an exclusive interview with WTR, the chairman of the new entity, NovumIP, has expanded on how it will become "a new force in the IP market". Read more

20 Sep 2019

“It’s the fear of the unknown”: Microsoft’s Priscilla Gomes on why AI should be embraced by the legal community

At this week's INTA Trademark Administrators and Practitioners meeting, WTR sat down with Priscilla Gomes, a paralegal in the Windows and games department of Microsoft, to find out whether fears of AI are warranted or misguided by legal professionals. Read more

1 Aug 2019

Best practice in litigation strategies: global perspectives

Trademark experts from around the world offer practical guidance on how to maximise the chances of litigation success in their jurisdiction. Read more

5 Apr 2019

How South Africa’s predicted economic upswing will create opportunities for brands and their advisors

The country is seeing increased interest from international entities - particularly from the US; this will likely grow in scale as not only the South African economy develops, but as other emerging markets on the African continent grow. Read more

IP Offices

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6 Apr 2018

Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot. Read more

17 Nov 2017

Germany’s hearty trademark scene and stunning courtroom win rates: exclusive data analysis

The latest country data report focuses on Germany. We reveal the European powerhouse’s leading sectors and explain how the country’s robust brands have continued to surge in value.

Online

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8 Oct 2019

Ortlieb v Amazon - the constant struggle to find what you are looking for

In the longstanding dispute between outdoor gear company Ortlieb and Amazon in Germany, the Federal Supreme Court has confirmed that the use of the trademark ORTLIEB by Amazon in online advertisements constituted trademark infringement. Read more

18 Oct 2017

German Federal Court rules on Google’s Image Search

The Federal Court of Justice has handed down a judgment of utmost importance for the exploitation of copyright on the Internet. The decision, which will become known and referred to under the name Thumbnail III, examined whether the display of preview images in search results constituted an act of making available a copyright work in the sense of the copyright law. Read more

1 Mar 2017

Germany: Fight for your (domain name) rights

As more and more companies use the Internet to sell goods and services, it is crucial to register the right domain name and then to protect it effectively Read more

12 Apr 2016

Trademark application filed for 'The Panama Papers'; applicant reveals ambitious plans

A Munich-based marketer has applied for a trademark in Germany for the term ‘The Panama Papers’, with plans to write a movie and sell merchandise related to the unprecedented leak of 11.5 million files from the database of law firm Mossack Fonseca. An IP expert tells us that if the application progresses to the opposition stage, the International Consortium of Investigative Journalists will need to rely on unregistered rights if it seeks to prevent its registration by a third party.

Portfolio Management

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14 Jan 2020

Infringement and filings increase but budget no longer the primary concern, says new study

As trademark filing numbers increase globally, a new report by CompuMark provides data on a rise in infringement incidents that trademark professionals are experiencing. While these infringements are costly, budget does not currently top the list of concerns for in-house teams. Read more

18 Nov 2019

Protecting and enforcing design rights: Germany

30 Sep 2019

Procedures and strategies for pharmaceutical brands: Germany

According to Section 10 of the Act on Advertising in the Field of Health, prescription-only medicinal products may be advertised only to doctors, dentists, veterinarians, pharmacists and persons authorised to trade in such medicinal products. Read more

22 Jul 2019

What Volkswagen’s portfolio tells us about disruption in the automotive industry

With the rise of autonomous driving technology, ride-hailing companies and micromobility transportation, traditional automotive manufacturers need to evolve fast. Positively, the strength and reputation of existing brands will prove key to fighting off digital start-ups. Read more

Trademark law

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25 Jan 2019

Litigation procedures and strategies: Germany

Alternative dispute resolution methods exist; however, they play only a minor role in Germany. One reason is Germany’s efficient court system, which allows for settling trademark conflicts quickly and at reasonable costs. Read more

17 Jan 2019

Amended German trademark law comes into force - key changes highlighted

The Trademark Law Modernisation Act, which aims to transpose Directive 2015/2436 into German law, has come into force. This update reviews the changes that will have the greatest impact on mark owners. Read more

7 Jan 2019

Protecting and enforcing design rights: Greece

With regard to national industrial designs, Greece has a ‘partially cumulative’ protection system. According to this doctrine, a registered design is eligible for protection under both copyright and design law, provided that the requirements for each type of right apply. Read more

7 Jan 2019

Protecting and enforcing design rights: Germany

German registered designs are governed by the Design Act, which was recently renamed to reflect the fact that German registered designs are now officially called ‘designs’, rather than the previously used ‘aesthetical models’. This is an interesting inconsistency in German law Read more

Twitter

01 Apr 2020

@WTRmagazine RT @trevorclittle: The WTR Industry Awards shortlist has just been revealed. It is a reminder that, during these difficult times, companies… Read more

01 Apr 2020

@WTRmagazine WTR Industry Awards: the 2020 shortlisted teams and individuals unveiled. https://t.co/oWePT8TqZu #WTRAwards https://t.co/tFoAaElMHe Read more

01 Apr 2020

@WTRmagazine RT @techsonIP: Covid-19 emergency means the work of trademark counsel is more important than ever https://t.co/AEUHSCT8Xo Read more

01 Apr 2020

@WTRmagazine RT @MarksmenTweets: The CARES Act and the #USPTO: assessing the potential impact of the act’s provisions https://t.co/zlRIFDnNwf by @WTRMa… Read more

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Kwan T Loh

Counsel

Vancouver BC, Canada

Smart & Biggar

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